Date: 20001026
Docket: T-1400-96
T-1401-96
T-1402-96
T-1403-96
IN THE MATTER of Sections 38 and 56 of the
Trade-marks Act, R.S.C. 1985, c. T-13 as amended,
AND IN THE MATTER of Appeals from decisions of the
Trade-marks Opposition Board dated April 12, 1996 in
oppositions by Quo Vadis International Ltd./Ltée
to the following Application nos of Cullman Ventures Inc.
655,583 "YEAR-AT-A-GLANCE" (Fed.Ct. #1400-96)
655,590 "MONTH-AT-A-GLANCE" (Fed.Ct. #1403-96)
655,593 "WEEK-AT-A-GLANCE" (Fed.Ct. #1402-96)
655,595 "DAY-AT-A-GLANCE" (Fed.Ct. #1401-960
BETWEEN:
CULLMAN VENTURES, INC.
Appellant
- and -
QUO VADIS INTERNATIONAL LTD./LTÉE
Respondent
REASONS FOR ORDER
LEMIEUX J.:
[1] These are four appeals pursuant to section 56 of the Trade-marks Act, (the "Act") from four decisions made on April 12, 1996 by G.W. Partington, Chairman of the Trade-marks Opposition Board (the "Opposition Board") denying four applications for registration of trade-marks submitted by Cullman Ventures Inc. ("Cullman"), namely: DAY-AT-A-GLANCE, WEEK-AT-A-GLANCE, MONTH-AT-A-GLANCE, with use as early as 1974, in association with "diaries, appointment books, calendars and record books". Cullman also sought the registration of the trade-mark YEAR-AT-A-GLANCE, with use as early as 1989, but only in association with calendars.
[2] These registrations were opposed by Quo Vadis Ltd./Ltée ("Quo Vadis") which the Opposition Board upheld in part. The Opposition Board ruled in connection with all of Cullman's applications for registration of the marks that they were not registrable as being clearly descriptive of the character or quality of the wares contrary to paragraph 12(1)(b) of the Act. Furthermore, on different grounds, the Opposition Board ruled that the proposed marks below could not be registered in association with the following wares:
| (a) DAY-AT-A-GLANCE could not be registered for calendars and record books; |
| (b) likewise, WEEK-AT-A-GLANCE could not be registered for record books; and |
| (c) also, MONTH-AT-A-GLANCE could not be registered for record books |
on the ground that Quo Vadis had met the evidentiary burden but Cullman did not meet its legal burden of establishing its claimed date of first use was contrary to section 30 of the Act.
[3] Quo Vadis had raised a third ground of objection that the applied for trade-marks cannot distinguish the applicant's wares from those of others. The Opposition Board ruled that as no specific allegations of fact have been relied upon by Quo Vadis in support of the non-distinctiveness ground, this ground is limited to the allegation that Cullman's trade-mark is not distinctive in that it is either clearly descriptive or deceptively misdescriptive in the English language of the character or quality of Cullman's wares and accordingly, the determination of that ground will effectively determine the third ground.
[4] Furthermore, the Opposition Board found Cullman's evidence fell short of establishing distinctiveness under subsection 12(2) of the Act.
[5] In these appeals, Cullman does not challenge the Opposition Board's finding that the DAY, WEEK and MONTH-AT-A-GLANCE proposed registered marks were contrary to section 30 claimed date usage in respect of record books. Also, Cullman did not press the point that the Opposition Board had erred in its subsection 12(2) finding.
[6] As a result, Cullman, in these appeals before me, challenges the following rulings of the Opposition Board:
| (1) That all marks proposed for registration fell within the prohibition set-out in paragraph 12(1)(b) of the Act and therefore were not registrable; and |
| (2) The finding that the mark DAY-AT-A-GLANCE in association with calendars was contrary to section 30 of the Act, i.e. the claimed date of first use as of 1974. |
[7] Cullman, before the Opposition Board, filed two affidavits: one by Catherine Ujihara the Customer Sales Manager of Keith Clark Office Products Ltd. (KCOP), the Canadian subsidiary of Cullman's Keith Clark Division in the United States. The other affidavit was by Nancy Nephew, the Credit Manager of Schaeffer-Eaton Pen Inc. (SEP) whom she joined in 1979, the predecessor in title to the registered trade-mark AT-A-GLANCE.
[8] Ms. Ujihara appended to her affidavit numerous exhibits showing how the applied for trade-marks were displayed and said the following:
| (1) That in March of 1988, Cullman acquired the AT-A-GLANCE line of products from SEP and directed KCOP to sell such products at wholesale in Canada. |
| (2) She explained that the AT-A-GLANCE line of products is a line of diaries and appointment books (collectively called agendas), address books and calendars. They are usually dated with a particular year's date. These products are sold to Canadian department stores, stationaries, card and specialty shops. |
| (3) She detailed how the products were marketed. Manufactured in the United States, these products, since 1990, bore the trade-mark AT-A-GLANCE when shipped to Canada in boxes; these boxes would be broken down to display the products at point of sale. |
| (4) She appended a number of product catalogues distributed by KCOP in the period 1988 to 1993; these catalogues were sent to wholesalers and retail stores and had been further distributed to gift, jewellery and stationary stores and to large companies such as governments. |
| (5) With respect to calendars, she said YEAR AT-A-GLANCE products are typically large wall-mounted calendars sold in certain specialty stores. |
| (6) She indicated the AT-A-GLANCE products were exhibited in Canadian trade shows and advertised in specialty magazines. |
| (7) She said the agendas, address books and calendars bore the trade-mark AT-A-GLANCE on a peelable paper label on the back and the trade-mark either AT-A-GLANCE or one of the trade-marks applied for which are the subject of these appeals appeared on their inside front cover and many appeared on the outside front cover. |
[9] Nancy Nephew, in her affidavit, exhibited numerous documents and spoke from the time she joined SEP in 1979 and when and how the AT-A-GLANCE line of products were marked with the trade-marks applied for including DAY-AT-A-GLANCE, WEEK-AT-A-GLANCE and MONTH AT-A-GLANCE. She detailed how the AT-A-GLANCE products were marketed in Canada through the catalogues of its parent in the United States, Schaeffer-Eaton Division of Textron Inc. with an inserted Canadian price list. She then described the products of the AT-A-GLANCE line. She said that almost all of the products bore the applied for marks on the cover and, if not there, on the fly leaf, the first sheet inside the front cover. She produced purchase orders in 1987 from various Canadian department stores. She said she did not have available orders for earlier years but confirmed, from her personal knowledge, that in each year from 1979 to 1987 there were sales of the AT-A-GLANCE products to major Canadian department stores. She talked about cooperative advertising with those department stores and also provided sales figures. She deposed from her knowledge of the market that the applied for marks were well-known in Canada in 1987 as identifying the goods of the Schaeffer-Eaton Division of Textron Canada Ltd., namely, agendas, diaries, appointment books, calendars and record books.
[10] Quo Vadis, before the Opposition Board, filed two affidavits: the affidavit of Gina Petrone. She is in charge of the trade-mark data base at Quo Vadis' solicitors. The other affidavit deposed was from Olivier Beltrami, Vice-President of Quo Vadis since 1987.
[11] In her affidavit, Ms. Petrone exhibited nine dictionary definitions where the term "glance" or the expression "at a glance" had been referred to. She then appended catalogues from three suppliers in the Province of Quebec, namely:
| 1. An extract from the catalogue of Magasin Pilon in 1986 which indicated that the pocket agenda showed one month on two pages or one week on two pages or one day per page; |
| 2. The catalogue in 1976 from Papeterie Sociale et Commerciale Inc. which described agendas by indicating, for example, "un jour par page", "trois jours par page", "journée entière d'un côté de la page"; and |
| 3. The catalogue of J.M. Bruno of September of 1990 which describes agendas in the following way: "de janvier à décembre, toute votre semaine d'un seul coup d'oeil". |
[12] In his affidavit, Olivier Beltrami commented on the affidavits sworn by Catherine Ujihara and Nancy Nephew pointing out several deficiencies, in his opinion. The thrust of his affidavit was to the effect the applied for trade-marks were not well-known in Canada and the quantities sold were not important.
| B. THE OPPOSITION BOARD'S DECISION |
| (a) As to the application of paragraph 12(1)(b) of the Act -- the clearly descriptive prohibition |
[13] In reviewing the Opposition Board's reasoning in respect of this aspect of all the appeals under consideration here, I cite from the Opposition Board's decision in Cullman's application to register the trade-mark DAY-AT-A-GLANCE (appeal T-1401-96). The Opposition Board's reasoning is substantially the same in all the other appeals.
[14] The Opposition Board applied the following principles framing its approach:
| (1) The issue as to whether the trade-mark DAY-AT-A-GLANCE is clearly descriptive of the character or quality of "diaries, appointment books", must be considered from the point of view of the average purchaser of those wares; |
| (2) The trade-mark must not be dissected into its component elements and carefully analysed, but rather must be considered in its entirety as a matter of immediate impression applying Wool Bureau of Canada Ltd. v. Registrar of Trade-marks, 40 C.P.R. (2d) 25 at pages 27-28 and Atlantic Promotions Inc. v. Registrar of Trade-marks, 2 C.P.R. (3d) 183, at page 186; |
| (3) "The legal burden is upon the applicant to show that its trade-mark DAY-AT-A-GLANCEis registrable. However, there is an initial evidentiary burden upon the opponent in respect of this ground to adduce sufficient evidence which, if believed, would support the truth of its allegations that the trade-mark DAY-AT-A-GLANCE is clearly descriptive or deceptively misdescriptive of the character or quality of the applicant's wares. It is therefore necessary to consider the opponent's evidence, as well as the applicant's evidence and the transcripts of the Ujihara and Nephew cross-examinations, in order to determine whether the opponent has met the initial burden upon it." |
[15] The Opposition Board then referred to several dictionary definitions for the word "glance". It retained the notions of "a quick look", "a quick or brief look", "a brief or cursory look", and "a quick, brief, hurried or cursory look". It cited another dictionary to the effect that if you see something at a glance, "you see or notice it immediately, and without having to think or look carefully".
[16] The Opposition Board then reviewed excerpts of the transcript of the Ujihara cross-examination where the witness said this in connection with the various trade-marks:
| Well, in that category, you would have several different kinds, like, depending on what the function is. So, if it, if it had a one day per page, we would call it a DAY-AT-A-GLANCE, and if it had one week to an opening, we would call it a WEEK-AT-A-GLANCE, and if it had a whole month when you open the book, then that's a MONTH-AT-A-GLANCE and if it's called a wall calendar with a full year on it, that would be a YEAR-AT-A-GLANCE; but they are all positioned as our better product line. Our best, I guess." [emphasis mine] |
[17] In connection with YEAR-AT-A-GLANCE, the witness said "that would be the whole year. That generally refers to a wall calendar".
[18] In addition to citing extracts from the cross-examination of Cullman's witness Ujihara, the Opposition Board reviewed two advertising flyers from Grand & Toy relating to appointment books, journals, planners, calendars, diaries and agendas from various suppliers producing those products companies including those of Cullman and Quo Vadis. Its summary was as follows:
| "One day to an opening", "One day to a page", "Two days to a page", "One month to an opening", "3 DAYS TO A PAGE", "week/view and month/view", "month-in-view, project/organizer, and more", "hard cover 1 week to an opening", "One month to a page", "2 weeks to an opening", "2 days per opening", "ONE WEEK AT A GLANCE", "One week per opening", "Week at a view and a month at a view formats together", "Special month at a view section precedes the week at a view section", "Month to an opening", "One month per page", "Month-in view", 4-year calendar", "1 day per opening", "1 week per opening". |
[19] The Opposition Board expressed its conclusion in the following terms:
| Having regard to the above, I have concluded that the opponent has met the evidential burden upon it in respect of the section 12(1)(b) ground of opposition in that the trade-mark DAY-AT-A-GLANCE as applied to "diaries, appointments books" describes the function of or the principal result achieved from using the applicant's wares, that is, they provide the user with the means whereby he or she can see the entries for a day-at-a-glance once the user has entered the appointments on the diary or appointment book. In this regard, in Thompson Research Associated Ltd. v. Registrar of Trade-marks, 67 C.P.R. (2d) 205 at page 208, Mr. Justice Mahoney pointed out that the character or quality of a ware includes its function and cited the decision of the Supreme Court of Canada in S.C. Johnson & Son, Ltd. v. Marketing International Ltd., 44 C.P.R. (2d) 16 at page 25 in support of his conclusion. [emphasis mine] |
[20] The Opposition Board then added the following:
| As the opponent has met the initial evidential burden upon it in respect of the second ground, the applicant must meet the legal burden upon it of establishing that its trade-mark is registrable. In paragraph 17 of her affidavit, Ms. Ujihara refers to the wholesale value of sales in Canada of the applicant's products bearing the trade-mark DAY-AT-A-GLANCE for each fiscal year from 1988 to 1992 was greater than $30,000. Nevertheless, I find that the applicant has failed to meet the legal burden upon it of showing that the trade-mark DAY-AT-A-GLANCE is not clearly descriptive of the character of its wares. Further, the applicant's evidence falls far short of establishing that the trade-mark DAY-AT-A-GLANCE had become distinctive in relation to its "diaries, appointment books" in Canada as of the filing date of the present application [April 19, 1990], within the scope of Section 12(2) of the Trade-marks Act. I have therefore concluded that the applicant's trade-mark is not registrable in view of the provisions of Section 12(1)(b) of the Act.[emphasis mine] |
| (b) The claimed date of first use -- DAY-AT-A-GLANCE for calendars |
[21] The Opposition Board approached its paragraph 30(b) Trade-mark Act analysis by setting out the following framework principles:
| (1) While the legal burden is upon the applicant to establish that its application is in compliance with paragraph 30(b) of the Act, there is an initial evidential burden on the opponent, citing Joseph E. Seagram & Son Ltd. et al. v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325 at pages 329-330; |
| (2) To meet the evidential burden upon it in relation to a particular issue, the opponent must adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support that issue exist citing John Labatt Co. v. Molson Companies Ltd., 30 C.P.R. (3d) 293, at page 298; |
| (3) That burden is lighter respecting the issue of non-compliance with paragraph 30(b) of the Act citing Tune Masters v. Mr. P's Mastertune Ignition Services Ltd., 10 C.P.R. (3d) 84 at page 89; |
| (4) Referring to Coca-Cola Ltd. v. Compagnie Française de Commerce International Cofci, S.A., 35 C.P.R. (3d) 405, it said an opponent can rely upon the cross-examination of the applicant's affiant to meet the evidential burden upon it. |
[22] The Opposition Board stated that the opponent had relied upon Cullman's deponents Ujihara and Nephew and the transcripts of their cross-examinations in support of their claimed date ground. It noted that neither of Cullman's affiants was specifically requested during their cross-examination to furnish the opponent with any documentation which would have supported either the Cullman's claim date of first use or the transfer of trade-mark rights. It said that Ms. Ujihara was only able to give evidence in relation to activities involving the trade-mark DAY-AT-A-GLANCE in Canada subsequent to the applicant acquiring the trade-mark in March 1988. As well, it noted Nancy Nephew joined the predecessor in title in 1979 and became Sales Administrator of the company in 1983, had no direct knowledge of the transfer of trade-marks rights from the applicant's predecessors to the applicant.
[23] The Opposition Board was not satisfied the evidence pointed to the applicant or its predecessor in title having used the trade-mark DAY-AT-A-GLANCE in association with what the average consumer would identify as being calendars.
| (a) The Standard of Review |
[24] Before this Court, Cullman filed four new affidavits as follows:
| (1) The affidavit of James D. Bacon, the Vice-President of Customer Services and Logistics of the Keith-Clark Division of Cullman Ventures Inc. in the United States, a position he has held for sixteen years; |
| (2) the affidavit of Robert Burge of Toronto who is the purchasing manager of Corporate Express Canada, a supplier of office products to commercial accounts which does not operate retail stores but sells through a sales force and through catalogues to offices and major companies; |
| (3) the affidavit of Douglas G. Cowie, who is the Director of Merchandising of Grand & Toy, said to be one of Canada's leading retailers of office products to commercial accounts and to the general public operating 79 retail stores in four provinces across Canada and selling directly to commercial accounts; and |
| (4) the affidavit of Karen L. Herault, an employee of Cullman's Canadian solicitors. |
[25] Cullman also filed a certified copy of its trade-mark registration AT-A-GLANCE which first issued to a predecessor in title in 1936 with a date of first use of January 1934. The wares then listed in the registration were memorandum books (record books), photograph albums, calendar books (agendas) and clipping books (scrapbooks).
[26] In his affidavit, Mr. Bacon described the Keith Clark products and said that dated products have subdivisions according to the dates of a particular year. Thus, he said, a dated diary, for example, has a particular section where entries can be made headed by each date within a particular year. He said in order to preserve a visual link between the various products of the AT-A-GLANCE line, these products were distributed in display cartons which bear the AT-A-GLANCE trade-mark, the words "PREMIUM PLANNERS" and the words "KEITH CLARK". He recognized YEAR-AT-A-GLANCE calendars were not packaged in this way because they were too large to be boxed. Instead, they were typically wrapped in clear plastic with the trade-mark YEAR-AT-A-GLANCE and KEITH CLARK visible through the plastic.
[27] Mr. Bacon said the applied for trade-marks were used for certain dated products within the AT-A-GLANCE line and were intended to distinguish certain products within the line from one another, as well as distinguishing them from the wares of others. He said, in his affidavit, other persons in the industry could, of course, use the terms "DAY", "WEEK", "MONTH", or "YEAR", to refer to their products but warned that, however, if they were trying to use DAY AT-A-GLANCE etc., Keith Clark would object because, in doing so, they would be using Keith Clark's registered trade-mark AT-A-GLANCE with which it uses the applied for trade-marks so that consumers who see them, will recall the AT-A-GLANCE trade-mark and so that this will build brand recognition between the products having these trade-marks and the other products of the AT-A-GLANCE line. He said it was not common in the industry for a manufacturer of diaries or calendars to have trade-marks which differ from one another by the words "DAY", "WEEK", "MONTH" and "YEAR" as happens with the Cullman applied for trade-marks in the AT-A-GLANCE line. He said he was unaware of any company in the industry which had a series of trade-marks which differ from each other by these words.
[28] Mr. Burge, in his affidavit, said he was personally aware the AT-A-GLANCE line of planning diaries and record books had been sold in Canada for at least 30 years and he recognized AT-A-GLANCE, DAY AT-A-GLANCE, WEEK AT-A-GLANCE and MONTH AT-A-GLANCE as brands or trade-marks for planning diaries and record books, and YEAR AT-A-GLANCE as a brand for wall calendars, all of which he associates with one manufacturer, namely Keith Clark, previously Schaeffer-Eaton. He said with Keith Clark's AT-A-GLANCE line of products, the applied for trade-marks identify different products. He said he has been purchasing, for resale to the public, for at least thirty years, the applied for trade-marks. He indicated there were many companies selling planning diaries and there were many well-known trade-marks for planning diaries. He said AT-A-GLANCE is a brand for premium quality planning diaries and other manufacturers of planning diaries would not use the applied for marks as a brand or trade-mark for planning diaries or wall calendars because the public and the trade recognize these terms as brands of Keith Clark for its line of premium quality planning diaries, record books and wall calendars.
[29] In his affidavit, Mr. Cowie from Grand & Toy said he had been employed by Grand & Toy for seventeen years and he recognized AT-A-GLANCE and the applied for trade-marks as brands of trade-marks for time management products that his company obtains from Keith Clark. He said these products are known and recognized by consumers and product selection personnel such as himself as the AT-A-GLANCE line of time management products and within this AT-A-GLANCE line, there were various products such as diaries and calendars which were distinguished from each other by the marks DAY-AT-A-GLANCE, WEEK-AT-A-GLANCE, and MONTH-AT-A-GLANCE, and some calendars were distinguished from other parts of the line by the trade-mark YEAR-AT-A-GLANCE.
[30] Mr. Cowie indicated Grand & Toy also carried brands of other time management products including Brownline, Blueline and Quo Vadis. He said time management products are brand specific and brand dependent, which means that for these products, the customer is usually looking for the same brand of product he or she had last year. He said the AT-A-GLANCE line of time management products were well-known within the trade and by customers as a line of time management products. He said each of the marks was definitely a highly recognized trade-mark by both the trade and customers and asked for by name by customers in his company's store.
[31] Karen Herault appended as Exhibit A to her affidavit the definition of "calendar" as it appears in the New Illustrated Webster's Dictionary. That definition reads:
| Calendar: n. 1. A systematic arrangement of sub-divisions of time, as years, months, days, weeks, etc. 2. An Almanac. 3. A schedule or list of things or events classified or chronologically arranged. |
[32] The respondent, Quo Vadis, filed in this Court, the affidavit of Dr. Francis Beltrami. He said Quo Vadis used, for several years, expressions similar to DAY-AT-A-GLANCE, WEEK-AT-A-GLANCE, MONTH-AT-A-GLANCE and YEAR-AT-A-GLANCE, to describe to Canadian consumers the characteristics of its products and, in particular, agendas. To demonstrate this, he appended six agendas, namely: (1) L'Agenda Planning -- Planning Jour where the following phrases appeared "Votre journée organisée d'un seul coup d'oeil", "Anno-Planning: L'organisation de l'année d'un seul coup d'oeil" and "Anno-Planning: L'organisation de l'année d'un seul coup d'oeil"; (2) L'Agenda Planning - Ministre" where the following phrases appeared "Votre semaine organisée d'un seul coup d'oeil", and "L'Organisation horizontale de votre année d'un seul coup d'oeil"; (3) "L'Agenda Planning - Mensuel" where the following appeared "Votre mois organisé d'un seul coup d'oeil" and "Anno-Planning: L'Organisation de l'année d'un seul coup d'oeil"; (4) L'Agenda Planning Diary - Planning Day where the following expressions appeared "Your Day Planned at a Single Glance" and Anno-Planning: The Organization of your Year at a Single Glance"; (5) L'Agenda Planning Diary Monthly 4 where the following phrases appeared "Your Month Planned at a Single Glance" and "ANNO-Planning: The Organization of Your Year at a Single Glance"; and (6) Agenda Planning Diary - Minister where these phrases were found "Your Week Plan at a Single Glance" and "Anno-Planning: The Organization of your Year at a Single Glance". Dr. Beltrami said that these expressions describe the characteristics of the agendas and have been used by Quo Vadis since 1971. He said Quo Vadis used similar expressions in its promotional material as well as in its catalogues.
[33] The Federal Court of Appeal in Molson Breweries v. John Labatt Ltd. (C.A.), [2000] 3 F.C. 145, recently had an opportunity to restate the standard of review on section 56 trade-mark appeals where subsection (5) provides that evidence in addition to that before the Registrar may be adduced before the Federal Court and that Court may exercise any discretion vested in the Registrar.
[34] Rothstein J.A. wrote for himself and Létourneau J.A. Isaac J.A. dissented in the result, but did not find it necessary to express an opinion on the standard of review.
[35] As I see it, Mr. Justice Rothstein established the following principles:
| (1) At paragraph 47 "on an appeal under section 56, the record created before the Registrar forms the basis of the evidence before the Trial Division judge hearing the appeal, which evidence may be added to by the parties. Thus, although the term trial de novo has come into frequent usage as describing a section 56 appeal, the term is not an entirely accurate description of the nature of such an appeal"; |
| (2) At paragraph 48, he said an appeal under section 56 involves, at least in part, a review of the findings of the Registrar. In conducting that review, because expertise on the part of the Registrar is recognized, decisions of the Registrar are entitled to some deference. He then quoted the following extract from Mr. Justice Ritchie's Supreme Court of Canada decision in Benson & Hedges Canada Ltd. v. St. Regis Tobacco Corporation, [1969] S.C.R. 192">[1969] S.C.R. 192 at 200: |
| In my view, the Registrar's decision on the question of whether or not a trade-mark is confusing should be given great weight and the conclusion of an official whose daily task involves the reaching of conclusions of this and kindred matters under the Act should not be set aside lightly but, as was said by Mr. Justice Thorson, then President of the Exchequer Court, in Freed & Freed Ltd. v. The Registrar of Trade-marks et al., [14 C.P.R. 19]: |
| ... reliance on the Registrar's decision that two marks are confusingly similar must not go to the extent of relieving the judge hearing an appeal from the Registrar's decision of the responsibility of the issue with due regard to the circumstances of the case. |
| (3) Mr. Justice Rothstein then referred to Mr. Justice Strayer's decision in McDonald's Corp. v. Silcorp Ltd. (1989) 24 C.P.R. (3d) 207 at 210, stating "that while the Court must be free to assess the decision of the Registrar, that decision should not be set aside lightly". |
| (4) Mr. Justice Rothstein then wrote this at paragraph 49 of his reasons: |
| It seems clear that in opposition proceedings where the issue is essentially one of facts concerning confusion or distinctiveness the decision of the registrar or the board represents a finding of fact and not the exercise of discretion. Therefore, the court should not impose upon itself the same degree of restraint, in reviewing that decision, as it would if the decision were essentially an exercise of discretion. It is thus free to review the facts to determine whether the decision of the registrar or the Board was correct, but that decision should not be set aside lightly considering the expertise of those who regularly make such determination.... While different panels of the Federal Court of Appeal have variously expressed the duty of this Court on appeal to be to determine whether the registrar has "clearly erred" or whether he has simply "gone wrong", it appears that it is the duty of a judge sitting on an appeal such as this to come to his own conclusions as to the correctness of the finding of the Registrar. In doing that he must, however, take into account the special experience and knowledge of the registrar or the Board, and more importantly have regard to whether new evidence has been put before him that was not before the Board. [emphasis mine] |
| (5) At paragraph 51 of his reasons for judgment, he concluded: |
| I think the approach in Benson & Hedges and in McDonald are consistent with the modern approach to standard of review. Even though there is an express appeal provision in the Trade-marks Act to the Federal Court, expertise on the part of the Registrar has been recognized as requiring some deference. Having regard to the Registrar's expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on the standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusions as to the correctness of the Registrar's decision. [emphasis mine] |
[36] Paragraph 12(1)(b), subsection 12(2) and paragraph 30(b) of the Act read:
| 12. (1) Subject to section 13, a trade-mark is registrable if it is not
. . .
(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
(2) A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.
the wares or services in association with which it is registered in that country and has been used, unless at the date of filing of the application in accordance with section 30 it was confusing with
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or
(c) a trade-name that had been previously used in Canada by any other person.
30. An applicant for the registration of a trade-mark shall file with the Registrar an application containing
. . .
(b) in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of wares or services described in the application; [emphasis mine]
|
|
| 12. (1) Sous réserve de l'article 13, une marque de commerce est enregistrable sauf dans l'un ou l'autre des cas suivants_:
. . .
b) qu'elle soit sous forme graphique, écrite ou sonore, elle donne une description claire ou donne une description fausse et trompeuse, en langue française ou anglaise, de la nature ou de la qualité des marchandises ou services en liaison avec lesquels elle est employée, ou à l'égard desquels on projette de l'employer, ou des conditions de leur production, ou des personnes qui les produisent, ou du lieu d'origine de ces marchandises ou services;
(2) Une marque de commerce qui n'est pas enregistrable en raison de l'alinéa (1)a) ou b) peut être enregistrée si elle a été employée au Canada par le requérant ou son prédécesseur en titre de façon à être devenue distinctive à la date de la production d'une demande d'enregistrement la concernant.
30. Quiconque sollicite l'enregistrement d'une marque de commerce produit au bureau du registraire une demande renfermant_:
. . .
b) dans le cas d'une marque de commerce qui a été employée au Canada, la date à compter de laquelle le requérant ou ses prédécesseurs en titre désignés, le cas échéant, ont ainsi employé la marque de commerce en liaison avec chacune des catégories générales de marchandises ou services décrites dans la demande;
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[37] The principles guiding the interpretation of paragraph 12(1)(b) of the Act are well-known and have been consistently applied by this Court (see Thomson Research Associates Ltd. v. Registrar of Trade-marks, 67 C.P.R. (2d) 205, F.C.T.D. per Mahoney J.; sustained on appeal by the Federal Court of Appeal (1983), 71 C.P.R. (2d) 287).
[38] I take the following principles from Mr. Justice Mahoney's judgment in the Trial Division:
| 1. Whether a trade-mark is clearly descriptive is one of first impression; |
| 2. The word "clearly" in paragraph 12(1)(b) is not a tautological use but it signifies a degree and is not synonymous; with accurate but means.... "easy to understand, self-evidence or plain"; |
| 3. It is not a proper approach of the determination of whether a trade-mark is descriptive to carefully and critically analyse the words to ascertain if they have alternate implications or alternate implications when used in association with certain wares, but rather to look at the words as they are used in association with certain wares and to ascertain what those words in the context in which they are used would represent to the public at large who will see those words and will form an opinion as to what those words will connote. |
[39] In determining whether a trade-mark is descriptive of the character or quality of the wares with which it is associated, consideration must be given to the result brought about and the effect itself. Mr. Justice Rand in General Motors Corp. v. Norman William Bellows, [1949] S.C.R. 679">[1949] S.C.R. 679, expressed the concept this way at page 688, a case where the trade-mark "FRIGIDAIRE" was held invalid because it was descriptive:
| What is the essence of the idea of a refrigerator? Unquestionably, that of cold air for preservation; not the precise mode of operation by which the conserving effect is achieved but the effect itself, which is the functional property of the article itself; all the rest is implied. The air must obviously be held within a container, but the result, however brought about, is what is looked at. [emphasis mine] |
[40] The General Motors case was followed by the same Court in S.C. Johnson & Son Ltd. et al. v. Marketing International Ltd., 44 C.P.R.(2d) 16, where the registration "OFF!" associated with an insect repellant was found to be descriptive. Pigeon J., on behalf of the Court, after consulting various dictionaries and noting the presence on the register of trade-marks such as "BUGZOFF" for insecticides and "GREESOFF" "MIST-OFF" "OZOFF" "EASY-OFF" and "SPRAYITOFF" for various compounds said that all of those expressions reveal the use of the word "OFF" as meaning a substance intended for getting rid of something, in other words, a repellant or removing agent. He said this about the trial judgment at page 25 of 44 C.P.R. (2d):
| ...He failed to consider the essential factor that this was an elliptical use of the word in association with an insect repellant and therefore, in that context, it was descriptive of the wares or of their effect. He also failed to consider that in applying to register this trade mark, Johnson U.S. was in effect claiming a monopoly for the use of a common word of the language, a word commonly used in connection with a variety of wares in related categories all exhibiting the common purpose of avoiding or getting rid of something. The variety and number of trade-marks ending with "off" presently on the register, shows its wide-spread use in that sense. [emphasis mine] |
[41] The Federal Court of Appeal in dismissing the appeal from Justice Mahoney's judgment in Thompson Research Associates Ltd., supra, a case involving the trade-mark "ULTRA FRESH" in association with bacteriostatic and fungistatic chemical composition sold, amongst others, to the textile and hosiery industries, where he had found the trade-mark clearly descriptive because "it clearly suggests the principal, if not only, effect of their application to other wares, in other words, their function" ruled:
| In our view, ULTRA FRESH is clearly descriptive of the function, the purpose and the effect when used as intended of the bacteriostats and fungistats in association with which it is used as a trade-mark. [emphasis mine] |
[42] In The Drackett Co. of Canada v. American Home Products, [1968] 2 Ex.Ct. 89, Mr. Justice Cattanach refused the registration of ONCE-A-WEEK in association with a floor cleaner on the grounds that it violated the prohibition in paragraph 12(1)(b) of the Act. He said a person faced with a floor cleaner described as ONCE-A-WEEK would assume the product need only be used weekly and would endure for that period of time which, to him, was an attribute or property that has a direct reference to the durable and excellent quality of the product. He held that the word "character" in paragraph 12(1)(b) must mean "a feature, trait or characteristic of the product" and concluded the proposed trade-mark clearly implies that the product with which such trade-mark is to be associated is to be used weekly and this was a direct reference to the character of that product.
[43] The policy underlining paragraph 12(1)(b) of the Act has been commented on in many cases including the Supreme Court of Canada's decision in Channell Limited and another v. M.A. Rombough and another, [1924] S.C.R. 600">[1924] S.C.R. 600 where the registration of O'CEDAR in association with the sale of furniture polish was held invalid as descriptive and by Mr. Justice Cattanach in Great Lakes Hotels v. Nosherry Limited, 56 C.P.R. 165, where the word PENTHOUSE in association for on-premises restaurant services and off-premises catering services was allowed to stand.
[44] Parliament's rationale for prohibiting the registration of clearly descriptive marks is because registration confers exclusive use to the registrant. Since the commonest of words in the English (or French) language might be employed as a trade-mark and since a language's vocabulary is common property belonging to all, Parliament did not want a person to obtain a monopoly on the use of a word having reference to the character or quality of those goods so as to prevent other members of the community from using them for the purpose of description.
| (d) Application to this case |
| (i) Whether the proposed marks are clearly descriptive |
[45] The centrepiece of counsel for the appellant's argument focuses on the recognized distinction between clearly descriptive marks and suggestive ones including those which are a covert and skilful allusion to the character of the wares citing GWG Ltd. v. Registrar of Trade-Marks, 55 C.P.R. (2d) 1, a case where Cattanach J. allowed an appeal from the Registrar of Trade-Marks who had refused the registration of KIDFITTERS in association with clothing, namely, jeans, jackets and skirts on the ground that they were clearly descriptive of an intrinsic characteristic of the wares.
[46] As I read this case, Justice Cattanach ruled that the coined word "kidfitters" had many meanings and if the trade-mark clearly conveyed the meaning that the wares are specifically designed to fit children, then it would be clearly descriptive. However, he found that one meaning would be "a person who fits apparel to young children" i.e. a service performed. He concluded at page 6 as follows:
| In my view, to attribute the meaning to the trade-mark "KIDFITTERS" for use in association with jeans, jackets and skirts which, standing alone, are not exclusively children's ware, from meanings of the two component words, the combination of which makes up the coined word, that it is clearly descriptive of the character of those wares in that they are designed to fit children rather the service that the manufacturer performs is an exercise in mental gymnastics. |
[47] Justice Cattanach, quoting with approval Lord McNaughton in Standard Ideal Co. v. Standard Sanitary M.F.G. Co., [1911] A.C. 78, held:
| If such a reference is present, the trade mark is not clearly descriptive being susceptible of another ready meaning. If there is a covert and skilful allusion to the character of the wares, then the trade mark is suggestive rather than clearly descriptive. |
[48] He also made reference as to whether the word "kidfitters" was a word that other traders in the ordinary course of business would be likely to desire to use in connection with their business. Based on the affidavit evidence, he held not.
[49] Counsel for the appellant argued the proposed mark must be clearly descriptive of the character or quality of the product, citing Provenzano v. Registrar of Trade-Marks, 37 C.P.R. (2d) 189, a case where Addy J. allowed the registration of "KOOL ONE" in association with beer. In that case, Justice Addy said to be clearly descriptive and not merely suggestive, the words must be material to the composition of the product. Justice Addy held that the words "Kool One" only refer to the state at which beer may or may not be sold or consumed and not to any intrinsic quality or character of the product and therefore not descriptive of the beer itself.
[50] Justice Addy's finding was upheld by the Federal Court of Appeal, 40 CPR (2d) 288, where Heald J.A. said the adjective "cold", when applied to beer, is not in any way descriptive of the inherent character or quality of beer, since the temperature at which beer may be used is unrelated to the character and quality of beer itself. In other words, it only refers to the condition in which it may or may not be used.
[51] On this basis, counsel for Cullman argues that the goods are not a day, a week or a month and, at its highest, they can have (once the consumer has used them), personal information about that consumer's own appointments activities or thoughts relating to parts of a particular day, week, month or year and this is not anything intrinsic to the wares itself. He adds the term "AT-A-GLANCE" connotes an action or a mental operation of the user which has nothing to do with the wares noting the user may absorb information rapidly after only glancing at the wares, or he or she may not.
[52] Counsel for the appellant also relied upon the Federal Court of Appeal's decision in Jordan & Ste-Michelle Cellars Ltd. v. T.G. Bright & Co. Ltd. (1984), 81 CPR (2d) 103, where Heald J.A. and Stone J.A., with Thurlow C.J. dissenting, held BRIGHTS CHILLABLE RED had for wine not to be clearly descriptive but merely suggestive of a method of serving or enjoying the respondent's wines. It was not material to the composition of the wine itself. It was not related to the wine's inherent nature but only what can be done with it in the hands of a consumer who must take its quality and characteristic as he or she finds it.
[53] Cullman's counsel also invoked Justice Addy's decision in Thomas J. Lipton Ltd. v. Salada Foods Ltd. (No. 3), 45 CPR (2d) 157, where the mark "LIPTON CUP · A · TEA" for tea was at issue. As I understand his reasoning, taking the trade-mark as a whole, he held in that context it cannot be said to describe the wares to be sold. Lipton was not selling cups (vessels) filled with loose tea, tea bags or liquid tea. "Cup" simply indicated the receptacle tea would ultimately be consumed in.
[54] I do not accept Cullman's arguments that the proposed marks DAY-AT-A-GLANCE, WEEK-AT-A-GLANCE, MONTH-AT-A-GLANCE and YEAR-AT-A-GLANCE when associated with agendas or calendars, are merely suggestive of the character or quality of those wares and are not material to their composition. Further, I do not accept that other persons in the trade are not interested in using these common words.
[55] In my view, the proposed trade-mark, in the context of agendas and calendars, conveys a specific descriptive connotation, an explicit description (see Home Juice Company v. Orange Maison Limited, [1970] S.C.R. 942">[1970] S.C.R. 942) and a direct reference as opposed to a covert allusion or a mere suggestion to a characteristic or quality of the agendas or calendars. Those specific and direct references or connotations are to a physical feature of the wares (the layout, design or openings of the printed agendas) as well as the function of those agendas and calendars, which is to enable a user to quickly identify appointments and engagements recorded by him or her on the designed layout of the agendas and calendars, whether that be for a day, a week, a month or a year. Cullman's affiant, Catherine Ujihara, clearly linked the proposed marks to the physical features of the wares and to their function and purpose (see paragraph 16 of these reasons). Her evidence was not in any way modified by Cullman's affiants before this Court. On the other hand, Dr. Beltrami expressed the view these words described a characteristic of the agendas.
[56] In the circumstances, I can find no basis to set aside the Opposition Board's decision. In my view, it correctly approached the matter as one of first impression, and made no error in construing the evidence. Moreover, it was correct in relying on the jurisprudence cited which is quite consistent with the additional case law set out in these reasons.
[57] My conclusion on this point is strengthened by the references in the Grand & Toy advertising flyers. These references to the products of trade competitors supplying agendas clearly demonstrate, in my view, the inherent character and quality of those wares in terms of physical layout and function. It would be inappropriate in the circumstances to grant one competitor an exclusive use of common words or phrases, descriptive of their inherent character or quality, effect or function.
[58] My findings on the clearly descriptive prohibition effectively disposes of Quo Vadis' third ground in the same manner in which the Opposition Board disposed of it. Should I be wrong in my paragraph 12(1)(b) finding, I would dismiss Quo Vadis' third ground of non-distinctiveness on the basis that Cullman's fresh evidence before me establishes that combined with the AT-A-GLANCE registered trade-mark, Cullman's use of the applied for trade-marks meets the test of distinctiveness, a finding which, however, is not related to subsection 12(2) of the Act which was not advanced by Cullman.
| (ii) Whether Cullman has correctly stated the date of first use for calendars for DAY-AT-A-GLANCE |
[59] Cullman's challenge is to the Opposition Board's finding that DAY-AT-A-GLANCE was not in use with what the average consumer would identify as calendars, a finding which it says the Opposition Board reached without reference to the testimony of Nancy Nephew or to any other factual basis. Cullman, however, acknowledges that Nancy Nephew testified that her company (Schaeffer-Eaton) sold calendars that go on the wall in the years she worked and that if they were in the catalogue, "we sold them". Ms. Nephew said that appointment books sometime had calendars in them but she distinguished these form "real calendars that go on the wall" and said she would not designate them as calendars in the AT-A-GLANCE line.
[60] Cullman argues there was new evidence in this Court which should lead to the conclusion that DAY-AT-A-GLANCE was in fact in use with calendars at the same time as was in use with appointment books and diaries. That new evidence consisted of the definition of calendar being "a systematic arrangement of subdivisions of time, as years, months, days, weeks, etc. with the result that appointment books and diaries are in fact multi-page calendars.
[61] A second challenge by Cullman to the Opposition Board's decision on this point relates to its misplaced evidentiary onus alleging Quo Vadis had led no positive evidence that Cullman's mark was not in use on the claimed date.
[62] In my view, the Opposition Board did not misdirect itself on the issue of the evidentiary and legal onus in a paragraph 30(b) challenge. The Opposition Board relied on its previous decision in Joseph E. Seagram & Son Limited et al. v. Seagram Real Estate Ltd., supra. Mr. Justice Heald in Labatt Breweries Co. Ltd. v. Molson Breweries, A Partnership, 68 C.P.R. (3d) 216 endorsed Mr. Justice McNair's view in the previous Labatt case, Labatt Breweries v. Molson Companies, 30 CPR (3d) 293 at 298. At page 231, Justice Heald rejected the submission by Labatt's counsel that the Registrar "can only look at the totality of the evidence in respect of the ground in respect of which it was filed" and that the Registrar must look at the evidence on an issue by issue basis, a ground by ground basis. Justice Heald was of the view that the Registrar is entitled to look at the evidence in its entirety in order that he or she be satisfied that the mark is registrable and that there are no valid grounds of opposition.
[63] Based on these decisions, there was evidence before the Opposition Board supporting its finding that Quo Vadis had discharged its evidentiary burden looking at the totality of the evidence including the affidavits and cross-examination of Nancy Nephew.
[64] I am unable to accede to Cullman's argument that the new evidence in the form of a definition of a calendar alters materially the finding made by the Opposition Board that DAY-AT-A-GLANCE was not used in association with calendars. The evidence is clear that appointment books or agendas are not the same wares as calendars in the minds of Cullman's affiants. Cullman's calendars are either wall calendars or monthly desk calendars. They are not formatted the same as agendas and are physically different and separate from agendas. The fact that appointment books and diaries (agendas) may sometimes have a calendar in them does not alter the fact that these wares are separate, a fact confirmed by Cullman seeking registration of the proposed mark DAY-AT-A-GLANCE with multiple wares. If calendars and agendas (diaries and appointment books) were the same wares, Cullman would not have any need to distinguish them when seeking registration.
DISPOSITION
[65] For all of these reasons, the four appeals by Cullman challenging the separate decisions of the Opposition Board refusing to register the proposed marks DAY-AT-A-GLANCE, WEEK-AT-A-GLANCE, MONTH-AT-A-GLANCE and YEAR-AT-A-GLANCE are dismissed with costs. The respondent Quo Vadis is entitled to its costs in the four appeals, but only to one set of costs in connection with the preparation of its memorandum of argument and one set of costs for counsel at the hearing before this Court.
François Lemieux
JUDGE
OTTAWA, ONTARIO
OCTOBER 26, 2000
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